WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PALFINGER AG v. 王先生 (Wang Xian Sheng)

Case No. D2021-3926

1. The Parties

The Complainant is PALFINGER AG, Austria, represented by GEISTWERT Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Austria.

The Respondent is 王先生 (Wang Xian Sheng), China.

2. The Domain Name and Registrar

The disputed domain name <palfinger-india.com> is registered with Hongkong Domain Name Information Management Co., Limited (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English and Chinese on December 17, 2021.

On December 17, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 17, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2022.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on January 19, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company headquartered in Austria, and mainly involved with hydraulic lifting, loading and handling products and systems. The Complainant was founded on November 14, 1988, but the use of the PALFINGER-brand by predecessors of the Complainant dates back to 1932. The Complainant has extensive global operations, e.g. in 2019, the Complainant generated a total sales revenue of approximately EUR 1,753.8 million, had 11,126 employees, was active in 32 countries and had 33 manufacturing and assembly locations throughout the world.

The Complainant provides evidence that it owns a trademark portfolio protecting the mark PALFINGER, including, but not limited to, Austrian trademark registration number 182296, for the word mark PALFINGER, with the registration date of May 26, 1999, and European Union Trade Mark registration number 000032995 for the word mark PALFINGER, with the registration date of December 2, 1997. The Complainant also owns a portfolio of domain name registrations, including <palfinger.com>, registered on August 5, 1997, which it uses to host its official website, which promotes, offers for sale and disseminates information about its products.

The disputed domain name was registered on November 7, 2021, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directed to a website displaying company information about a company named 龙口装潢公司 (Longkou Decoration Company) supposedly offering decoration services. However, the Panel notes that on the date of this Decision, the disputed domain name resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for PALFINGER, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive and well-known, and submits company and marketing information as well as evidence regarding its products and its geographical reach. The Complainant particularly contends that the Respondent was using the disputed domain name to display some rudimentary company information with the obvious goal to cover the bad faith of the registration of the disputed domain name, that Internet users looking for the Complainant’s Indian branch would be wrongly diverted to the website at the disputed domain name, that the Respondent is in no way connected to or licensed by the Complainant, and that the Respondent’s use of the PALFINGER trademark in the disputed domain name does not confer any rights or legitimate interests on it, and constitutes use in bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

According to the Registrar’s verification response, the language of the Registration Agreement for the disputed domain name is Chinese. Nevertheless, the Complainant filed its Complaint and its amended Complaint in English, and requests that English be the language of the proceeding. The Panel notes that the Complainant also submitted a Chinese version of the amended Complaint on December 17, 2021, but maintained its request for English to be the language of the proceeding. The Panel notes that the Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding.

In considering this request, the Panel has carefully reviewed all elements of this case, and deems the following elements particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited by the Center in a timely manner in Chinese and English to present its comments on the language of the proceeding and its response on the merits in either Chinese or English, but chose not to do so); the fact that the disputed domain name contains the Complainant’s trademark in its entirety; the fact that the disputed domain name is written in Latin letters and not in Chinese characters; and, finally, the fact that Chinese as the language of the proceeding could lead to unwarranted delays and additional costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and has decided that the language of this administrative proceeding shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the marks PALFINGER based on its intensive use and longstanding registration of the same as trademarks in various jurisdictions.

As to confusing similarity of the disputed domain name with the Complainant’s marks, the Panel considers that the disputed domain name consists of the combination of two elements, being the Complainant’s PALFINGER trademark combined with the geographical term “India”, connected by a hyphen. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s PALFINGER trademark, which remains easily recognizable in the disputed domain name as its only distinctive feature. The Panel considers that the addition of the geographical term “India” therefore does not prevent a finding of confusing similarity. The Panel also notes that the applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1. Finally, the Panel finds that the hyphen may be disregarded as it is considered merely as a punctuation mark (see also Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainant, the Respondent is not a bona fide provider of goods or services under the disputed domain name, and is not making legitimate noncommercial use or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Moreover, upon review of the facts, the Complainant provides evidence that the disputed domain name directed to an active website, which contained very succinct company information regarding a company named 龙口装潢公司 (Longkou Decoration Company) supposedly offering decoration services, and which seems to be entirely unrelated to the Complainant or its PALFINGER trademarks. However, the Panel notes that on the date of this Decision, the disputed domain name resolves to an inactive website. In this regard, the Panel finds that holding a domain name passively, without making any use of it, does not confer any rights or legitimate interests in the disputed domain name on the Respondent (see earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691; and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

Furthermore, the nature of the disputed domain name, incorporating the Complainant’s trademark for PALFINGER in its entirety, combined with the geographical term “-India”, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s well-known trademarks for PALFINGER, by using such mark in its entirety in the disputed domain name to mislead and divert Internet users to the website hosted at the disputed domain name. The Panel considers the disputed domain name to be so closely linked and so obviously connected to the Complainant and its trademark (by suggesting to be the official domain name hosting the website for PALFINGER-branded products for the Indian market) that the Respondent’s registration of the disputed domain name persuasively points toward the Respondent’s bad faith. Moreover, given the distinctiveness and fame of the Complainant’s trademark, the Panel finds that the registration of the disputed domain name clearly targeted such trademark, and that the Respondent therefore knew, or at least should have known, of the existence of the Complainant’s trademarks. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name directed to an active website, which contained very succinct company information regarding a company named 龙口装潢公司 (Longkou Decoration Company) supposedly offering decoration services, and which seems to be entirely unrelated to the Complainant or its PALFINGER trademarks. In the Panel’s view, this shows that the Respondent was abusing the Complainant’s trademarks to mislead and divert Internet users for commercial gain to its commercial website showing company information of an entirely unrelated company. However, on the date of this Decision, the disputed domain name resolves to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attributes particular relevance to the fact that the disputed domain name contains the entirety of the Complainant’s trademark, to the high degree of distinctiveness and well-established fame of the Complainant’s trademarks, and to the unlikelihood of any good faith use to which the disputed domain name may be put by the Respondent. In these circumstances, the Panel considers that such passive holding of the disputed domain name by the Respondent constitutes use of the disputed domain name in bad faith. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <palfinger-india.com>, be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: January 28, 2022